Nonexclusive Patent License - Oak Ridge National Laboratory

SAMPLE AGREEMENT- FOR REFERENCE ONLY 

(Sublicensing prohibited) 

PLA-XXXX 

NONEXCLUSIVE COMMERCIAL PATENT LICENSE 

AGREEMENT 

This Nonexclusive Commercial Patent License Agreement is between UT-Battelle, LLC (UT- 

Battelle), a Tennessee non-profit limited liability company (“Licensor”) having an address at 1 

Bethel Valley Road, Oak Ridge, Tennessee 37831-6196, and __________________, a 

_______________ (list state) (list type of organization, e.g., Corporation, LLC, Partnership, etc.) 

______________ (“Licensee”) having an address at ___________________, hereinafter referred 

to singly as the “Party” or jointly as the “Parties.” 

ARTICLE 1 

BACKGROUND 

1.1 Licensor manages and operates the Oak Ridge National Laboratory under its Prime 

Contract No. DE-AC05-00OR22725 with the United States Department of Energy 

(“DOE”), an agency of the United States Government. 

1.2 Licensor has rights in certain patents and patent applications listed in Exhibit A. 

1.3 Licensee desires, and Licensor is willing to grant, a nonexclusive commercial license 

under such patents and patent applications in certain fields of use. 

1.4 This Agreement specifically includes Exhibit A, LICENSED PATENTS, Exhibit B, 

TERM SHEET & FINANCIAL OBLIGATIONS, and Exhibit C, DEVELOPMENT 

AND COMMERCIALIZATION PLAN, which are attached. 

1.5 Except as provided in Article 7, the license will run through the Term of this Agreement. 

ARTICLE 2 

DEFINITIONS 

As used in this Agreement, the following terms shall have the meanings set forth below: 

2.1 “Accounting Period” means the period from January 1 through December 31 of each 

year, with the first Accounting Period beginning on the Effective Date. 

2.2 “Dispose,” “Dispose of” or “Disposition” means the sale, lease or other transfer of 

Licensed Products. 

2.3 “Effective Date” means the date of the signature of the last Party to sign this Agreement. 

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2.4 “Field(s) of Use” means and is limited to ______(FOU)____________. 

2.5 “Government” means the Federal Government of the United States of America. 

2.6 “Gross Sales” means the U.S. Dollar value of all consideration to which Licensee is 

entitled for the Disposition of Licensed Products and plus the U.S. Dollar value of all 

consideration to which the Licensee is entitled for the practice of Licensed Processes. In 

the event Licensee does not ultimately Dispose of Licensed Products, or Licensee 

Disposes of Licensed Products for less than fair market value, the fair market value of 

such Licensed Products (as if there had been a fair market value Disposition to a third 

party) shall be included in Gross Sales. 

2.7 “Licensed Patents” means those patents and patent applications listed in Exhibit A, and 

any United States patents issuing at any time from such applications and any divisions, 

continuations, continuations-in-part thereof (excluding those claims in such applications 

claiming new subject matter), reissues, substitutes, or extensions of the patents. The term 

“Licensed Patents" does not include any patent found to be unenforceable or invalid by a 

final adjudication by a court of competent jurisdiction. 

2.7 “Licensed Patents” means each patent and patent application listed in Exhibit A, and any 

patents issuing in any country at any time from such application and any divisions, 

continuations, continuations-in-part (excluding those claims in such applications claiming 

new subject matter) thereof, and all reissues, reexaminations, substitutes, or extensions of 

any such patents, and all patent applications corresponding to any of the foregoing. The 

term “Licensed Patents" does not include any patent found to be unenforceable or invalid 

by a final adjudication by a Court of competent jurisdiction. 

2.8 “Licensed Products” means any device, apparatus, product, compound, composition of 

matter, product by process, kit, system, material or algorithm the manufacture, use, sale, 

offer for sale, or import of which, but for the license granted in this Agreement, would 

infringe or contribute to the infringement of a claim of a Licensed Patent. 

2.9 “Net Sales” means the Gross Sales less the total of all: 

(a) sales tariffs, duties and/or taxes imposed on the Licensed Products manufactured 

in the United States; 

(b) outbound transportation prepaid or allowed; and 

(c) amounts allowed or credited on returns. 

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2.10 “Patent Costs” means the verifiable costs related to the preparation, filing, prosecution 

and maintenance of U.S. and foreign Licensed Patents. 

2.11 “Royalty” and “Royalties” mean the payments owed to Licensor based on Gross or Net 

Sales as specified in Exhibit B. 

2.12 “Term” means the period of time starting on the Effective Date and continuing until 

expiration of the last to expire of the Licensed Patents, subject to the terms of Article 7. 

ARTICLE 3 

GRANT 

3.1 Licensor grants to Licensee, and Licensee accepts for the Term of this Agreement, a 

nonexclusive commercial license under the Licensed Patents to make, have made, use, 

offer to sell, sell, Dispose of, and import (subject to Article 5.1) the Licensed Products in 

the Field of Use. This grant specifically excludes any right to sublicense to others. 

3.3 Licensor may, in its sole discretion, grant other nonexclusive licenses to the Licensed 

Patents inside or outside the Field of Use. 

3.4 Licensor may, in its sole discretion, grant exclusive licenses to the Licensed Patents 

outside the Field of Use. 

3.5 Licensee acknowledges that no license is granted or implied under, and expressly agrees 

not to make, have made, offer to sell, sell, Dispose of or import the Licensed Products 

outside the Field of Use. Licensee agrees that its making, having made, using, offering to 

sell, selling, Disposing of and importing the Licensed Products outside the Field of Use is 

a breach of this Agreement and is an infringement of the Licensed Patents. 

ARTICLE 4 

CONSIDERATION AND FINANCIAL OBLIGATIONS 

4.1 In consideration for the grant of commercial license, Licensee agrees to comply with all 

the provisions of this Agreement, to pay all fees, Royalties, costs, and all other 

consideration within the time periods and as otherwise specified in Exhibit B of this 

Agreement for the Term, and to satisfy the requirements of the Development and 

Commercialization Plan set forth in Exhibit C. Prompt payment of all amounts due to 

Licensor and satisfaction of the Development and Commercialization Plan requirements 

are material to this Agreement. 

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4.2 Licensee will pay to Licensor a fixed license fee in the amount specified in Exhibit B 

(Execution Fee), which will be nonrefundable and not creditable against any Royalties. 

Exhibit B specifies when the Execution Fee is due and payable. In the event of 

termination of this Agreement, the entire unpaid balance of the Execution Fee will be due 

and payable on or before the effective date of termination. 

4.3 Licensee agrees to pay the Royalties in the amounts specified and on the due dates 

identified in Exhibit B. 

4.4 Licensee will reimburse Licensor for a pro rata share, based on total number of licensees 

of Licensed Patents, of all Patent Costs within thirty (30) days of submission of the proof 

of costs incurred by Licensor. If Licensee elects to discontinue reimbursement of patent 

costs for any patent or patent application, then that patent or patent application will be 

excluded from the Licensed Patents, and all rights relating to the excluded patent or 

patent application will revert to Licensor and may be freely licensed by Licensor to 

others. 

4.5 All payments will be made to Licensor in U.S. dollars by wire transfer in accordance with 

the following wire instructions; unless and until written notice is provided by Licensor of 

a change in the wire instructions: 

First Tennessee Bank, Memphis: ABA #084000026 

For further credit to First Tennessee, Knoxville: Account #4238028 

Beneficiary: UT-Battelle, LLC 

S.W.I.F.T. Code: FTBMUS44 

4.6 Licensee will owe no Royalties on its Dispositions of Licensed Products involving 

Government funds, including funds derived through a Military Assistance Program of the 

Government or otherwise derived through the Government, because of the Government’s 

License Rights. Licensee will report all Gross Sales received from such Dispositions by 

providing a Government control number and identification of the Government agency in 

the written report for the pertinent Accounting Period. 

4.8 In the event Licensee fails to make any payment due to Licensor within the time period 

prescribed for such payment under this Agreement, the unpaid or overdue amount will 

bear interest at the rate of one and one-half percent (1.5%) per month from the date 

payment was due until payment in full, with interest, is made. In addition, Licensee 

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agrees to reimburse Licensor for any costs or expenses, including attorney’s fees, 

incurred by Licensor in collection of such overdue payments. 

ARTICLE 5 

CONDITIONS OF GRANT 

5.1 Licensee agrees that any Licensed Products for use or sale in the United States will be 

substantially manufactured in the United States. 

5.2 Licensee will mark all Licensed Products in accordance with the statutes of the United 

States relating to marking of patented articles. Any such marking may indicate that 

Licensee has a license from Licensor. Otherwise, Licensee is prohibited from using 

Licensor’s name or the name “Oak Ridge National Laboratory” in any such marking or 

any advertising, promotion or commercialization of Licensed Products or Licensed 

Processes without written approval of Licensor. 

5.3 The rights and licenses granted by Licensor in this Agreement are personal to Licensee 

and may not be assigned or otherwise transferred in whole or in part except by merger or 

acquisition as may be otherwise permitted by the terms of this Agreement. 

If Licensee merges or is otherwise acquired by another entity that acquires substantially 

all of Licensee’s business assets that relate to this Agreement, then Licensee may assign 

its rights and obligations under this Agreement to the merging or acquiring entity, 

effective on the date the merger or acquisition becomes effective, provided that all the 

following requirements have been satisfied in advance of the merger or acquisition: 

5.3.1 Licensee notifies Licensor within forty-five (45) calendar days prior to said 

merger or acquisition. 

5.3.2 Licensor approves said assignment of rights and obligations under this 

Agreement. Licensor’s approval, which is subject to the Prime Contract and DOE 

policy considerations relating to technology transfer involving foreign owned or 

controlled companies, shall not be unreasonably withheld; 

5.3.3 Licensee has paid all royalties, fees and payments due Licensor; 

5.3.4 The merging or acquiring entity has agreed to comply with the terms and 

conditions of this Agreement; 

5.3.5 If the merging or acquiring entity is subject to ownership or control by a non-U.S. 

entity then Licensee must obtain Licensor and DOE approval of the assignment 

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and will comply with the DOE’s foreign ownership and control justification 

criteria then in effect. 

5.3.6 Licensee shall compensate Licensor for this grant of right of merger or acquisition 

by paying a fee as specified in Exhibit B, Item I. 

5.4 Licensee will not pledge its rights under this Agreement for any reason, including as 

security to obtain financing, without the prior written approval of Licensor. The Parties 

agree that any such pledge by Licensee without such approval by Licensor shall be an 

automatic, material and incurable breach of the Agreement resulting in termination of the 

Agreement effective as of the attempt by Licensee to make such pledge. 

5.5 Licensor hereby agrees that, in the event Licensee, by its own actions, or the action of 

any of its shareholders or creditors, files or has filed against it a case under the 

Bankruptcy Code of 1978, as previously or hereafter amended, Licensor shall be entitled 

to relief from the automatic stay of Section 362 of Title 11 of the U.S. Code, as amended, 

to pursue any rights and remedies available to it under the License. Licensee hereby 

waives the benefits of such automatic stay and consents and agrees to raise no objection 

to such relief. 

ARTICLE 6 

RECORDS, REPORTS, AND ROYALTY PAYMENTS 

6.1 Licensee will keep and make available to Licensor for audit, inspection and copying by 

Licensor or its designee, including an accounting firm, adequate and sufficiently detailed 

records to enable Licensee’s financial obligations required under this Agreement to be 

determined readily and accurately. Licensee will maintain these records for a period of 

three (3) years after the end of the last Accounting Period to which the records refer. In 

the event an examination of Licensee’s records reveals an underpayment of more than 

five percent (5%) of the correct Royalty amount, Licensee will pay all costs incurred by 

Licensor related to the examination of records in addition to paying the balance due, plus 

any applicable interest at the rate specified in Article 4.8. Overpayments, if any, will be 

returned to Licensee. 

6.2. Licensee shall provide Licensor a written report for each Accounting Period during the 

Term of this Agreement, no later than thirty (30) days after the end of each Accounting 

Period, which identifies for such Accounting Period: 

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(a) 

(b) 

(c) 

(d) 

(e) 


the total Gross Sales by Licensee itemized by Licensed Patent; 

the total amount of Royalties due to Licensor; 

the total amount of sales tariffs, duties and/or taxes imposed on the Licensed 

Products manufactured in the United States; 

the total outbound transportation costs prepaid or allowed; and 

the total amounts allowed or credited on returns. 

The first such report will include this information for all Licensed Products Disposed of 

between the Effective Date and the end of the first Accounting Period. 

6.3 The due date for payment of Royalties for each Accounting Period is the due date for 

submittal of each report. If either the report or the Royalty payment is not received by 

Licensor on or before the due date, the payment will be considered late. 

6.4 Licensee will submit a written report to Licensor within thirty (30) days after the date of 

any termination or expiration of this Agreement which contains the same information 

required in Article 6.2 above for Licensed Products made, used, or Disposed of prior to 

such expiration or termination that were not previously reported to Licensor. At the time 

this report is submitted, Licensee will pay to Licensor all Royalties and any other 

consideration due Licensor. 

ARTICLE 7 

BREACH AND TERMINATION 

7.1 This Agreement may be terminated by either Party for any material breach of the 

Agreement by the other Party. Such termination will be effective sixty (60) days after 

written notice specifying the breach to the other Party. If the specified breach is cured 

before the effective date of termination, the Agreement will not be terminated. 

7.2 In the event Licensee either (1) fails to make payment to Licensor of Royalties or other 

consideration in accordance with Exhibit B of this Agreement or (2) fails to satisfy the 

requirements of the Development and Commercialization Plan in Exhibit C, Licensor 

may, at its sole discretion, terminate this Agreement with respect to specified Licensed 

Patents. There will be no reduction in any of the payments due from Licensee, including 

but not limited to Royalties. 

7.3 In addition to termination, in the event of a material breach by Licensee, Licensor may 

pursue any rights and remedies available to it by law. 

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7.4 This Agreement will not be terminated for any breach that is the result of an act of God, 

acts or omissions of any government or agency thereof, compliance with rules, 

regulations, or orders of any governmental authority or any office, department, agency, or 

instrumentality thereof, fire, storm, flood, earthquake, accident, acts of the public enemy 

or terrorism, war, rebellion, insurrection, riot, sabotage, invasion, quarantine, restriction, 

transportation embargoes, or failures or delays in transportation. 

7.5 Any termination of this Agreement will not impact Licensor’s ownership interest, if any, 

in Licensee. 

7.6 The rights and remedies granted herein, and any other rights or remedies which the 

Parties may have, either at law or in equity, are cumulative and not exclusive of others. 

7.7 Neither Party will be relieved of any obligation or liability under this Agreement arising 

from any act or omission committed prior to the termination date. Upon termination, 

Licensee will execute any documents necessary to achieve the transfer to Licensor of all 

rights to which Licensor may be entitled under this Agreement. 

7.8 Licensee may terminate this Agreement for any reason if Licensee provides Licensor 

with sixty (60) calendar days prior notice of its intent to terminate and pays Licensor all 

patent reimbursement fees owed at the time or termination, if applicable, and all other 

fees and Royalties due or the pro rata portion of any Annual Minimum Royalties due in, 

or at the end of, the year of termination under Exhibit B, whichever is greater. 

7.9 This Agreement will terminate automatically upon a final adjudication of invalidity, 

unenforceability, or the extinguishment of all Licensed Patents, for any reason. 

7.10 This Agreement will terminate automatically if Licensee contests the validity or 

enforceability of any Licensed Patent or requests reexamination of any Licensed Patent. 

7.11 Expiration or termination of this Agreement will be without prejudice to any rights that 

may have accrued to the benefit of a Party prior to such expiration or termination. 

ARTICLE 8 

INFRINGEMENT 

8.1 Licensee will notify Licensor of any suspected infringement of the Licensed Patents. 

8.2 The sole right to institute a suit for infringement rests with Licensor, and Licensor shall 

retain all the proceeds thereof. 

8.3 Licensee agrees to cooperate with Licensor in all aspects of such infringement suit, 

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including having any of Licensee’s employees testify when requested by Licensor, and 

making available any records, papers, information, specimens, and the like. 

ARTICLE 9 

REPRESENTATIONS AND WARRANTIES 

9.1 Licensee represents and warrants that it will not export any technical information (or the 

direct product thereof) furnished to Licensee, either directly or indirectly by Licensor in 

the grant of license to the Licensed Patents, from the United States of America, directly 

or indirectly without first complying with all requirements of the Export Administration 

Regulations, including the requirement for obtaining any export license, if applicable. 

9.2 Licensee acknowledges it may be subject to criminal liability under U.S. laws for 

Licensee’s failure to obtain any required export license. 

9.3 Licensee will indemnify, defend and hold harmless Licensor, DOE, their respective 

members, officers, directors, agents, employees, and persons acting on their behalf, 

(“Indemnitees”) from liability involving the violation of such export regulations, either 

directly or indirectly, by Licensee. 

9.4 Subject to Article 7, Licensee agrees to indemnify and hold harmless Indemnitees from 

and against any and all liabilities, penalties, fines, forfeitures, claims, demands, causes of 

action, damages, and costs and expenses (including the costs of defense, prosecution 

and/or settlement, including, but not limited to, attorney’s fees), caused by, arising out of 

or related to, in whole or in part, Licensee’s exercise of rights under this Agreement or 

any other action or inaction relating to Licensed Patents, Licensed Products, or Licensed 

Processes, including, but not limited to, claims or demands of product liability, personal 

injury, death, damage to property or violation of any laws or regulations, except for those 

arising from Licensor’s gross negligence. 

9.5 Nothing in this Agreement will be deemed to be a representation or warranty by Licensee 

or the U.S. Government of the validity of the Licensed Patents or the accuracy, safety, or 

usefulness for any purpose, of any technical information made available by Licensor. 

ARTICLE 10 

DISCLAIMERS 

10.1 NEITHER LICENSOR, DOE, NOR PERSONS ACTING ON THEIR BEHALF 

WILL BE RESPONSIBLE FOR ANY INJURY TO OR DEATH OF PERSONS OR 

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OTHER LIVING THINGS OR DAMAGE TO OR DESTRUCTION OF 

PROPERTY OR FOR ANY OTHER LOSS, DAMAGE, OR INJURY OF ANY 

KIND WHATSOEVER RESULTING FROM LICENSOR’S GRANT OF 

LICENSE TO LICENSEE UNDER THIS AGREEMENT. 

10.2 ALL LICENSED PATENTS, INFORMATION, MATERIALS OR SERVICES 

FURNISHED UNDER OR WITH THIS AGREEMENT (“DELIVERABLES”) 

ARE PROVIDED ON AN “AS IS” BASIS. NEITHER LICENSOR, DOE, NOR 

PERSONS ACTING ON THEIR BEHALF MAKE ANY REPRESENTATIONS, 

OR EXTEND ANY WARRANTIES, EITHER EXPRESS OR IMPLIED: (a) WITH 

RESPECT TO THE VALIDITY OF THE LICENSED PATENTS; (b) WITH 

RESPECT TO THE MERCHANTABILITY, ACCURACY, COMPLETENESS, 

FITNESS FOR USE OR USEFULNESS OF ANY DELIVERABLES; (c) THAT 

THE USE OF ANY SUCH DELIVERABLES WILL NOT INFRINGE 

PRIVATELY OWNED RIGHTS; (d) THAT THE DELIVERABLES WILL NOT 

RESULT IN INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE; (e) 

THAT THE DELIVERABLES WILL ACCOMPLISH THE INTENDED 

RESULTS OR ARE SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED 

OR PARTICULAR PURPOSE; OR (f) WITH RESPECT TO USE, OR 

DISPOSITION BY LICENSEE OR ITS VENDEES OR OTHER TRANSFEREES 

OF LICENSED PRODUCTS INCORPORATING OR MADE BY USE OF (1) 

INVENTIONS LICENSED UNDER THIS AGREEMENT OR (2) 

INFORMATION, IF ANY, FURNISHED UNDER THE AGREEMENT. 

FURTHERMORE, LICENSOR AND DOE HEREBY SPECIFICALLY 

DISCLAIM ANY AND ALL WARRANTIES, EXPRESS OR IMPLIED, FOR ANY 

LICENSED PRODUCTS RESULTING FROM LICENSOR’S GRANT OF 

LICENSE HEREUNDER. IT IS AGREED THAT NEITHER LICENSOR NOR 

DOE WILL BE LIABLE FOR CONSEQUENTIAL, SPECIAL, OR INCIDENTAL 

DAMAGES IN ANY EVENT. LICENSEE WILL MAKE NO WARRANTY, 

EXPRESS OR IMPLIED, ON BEHALF OF LICENSOR OR THE DOE. 

10.3 Nothing in this Agreement will be construed as 

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(a) 

(b) 

(c) 

(d) 

an obligation of the Licensor to bring or prosecute actions or suits against third 

parties for infringement (except to the extent and in the circumstances stated in 

Article 8); or 

an obligation of the Licensor to furnish any manufacturing or technical 

information or technical assistance, or 

conferring a right to use in advertising, publicity, or otherwise any trademark or 

name of Licensor (except to the extent stated in 5.2); or 

granting by implication, estoppel, or otherwise, any licenses or rights under 

patents of Licensor other than Licensed Patents, regardless of whether such other 

patents are dominant of or subordinate to any Licensed Patents. 

ARTICLE 11 

GENERAL 

11.1 All notices and reports shall be addressed to the Parties as follows: 

If to Licensor: 

Accounting Administration, Partnerships 

Facsimile 

UT-Battelle, LLC (865) 576-9465 

One Bethel Valley Road 

Phone 

Oak Ridge, Tennessee 37831-6196 (865) 241-2353 

E-Mail 

Collinssm1@ornl.gov 

If to Licensee: 

Name and/or Title 

Company Name 

Address 1 

Address 2 

City, State, ZIP 

Facsimile 

(XXX) XXX-XXXX 

Phone 

(XXX) XXX-XXXX 

E-Mail 

???@???.??? 

11.2 All stock certificates, if any, will be sent to the address for notices. 

11.3. Any notice, report or any other communication required to be given will be in writing and 

delivered either: (1) personally, (2) by express, registered or certified first-class mail, (3) 

by commercial courier, or (4) by facsimile with machine confirmation of transmission. 

11.4 The failure of either Party to enforce a provision of this Agreement or to exercise any 

right or remedy will not be a waiver of such provision or of such rights or remedies or 

the right of the Parties thereafter to enforce each and every provision, right or remedy. 

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11.5 This Agreement may be amended or modified only by a written instrument signed by 

both Parties. 

11.6 The determination by a court of competent jurisdiction that any part, term, or provision of 

this Agreement is illegal or unenforceable, shall not affect the validity of the remaining 

provisions of this Agreement. 

11.7 Licensor may assign this Agreement and all rights, duties and obligations hereunder, to 

DOE or a successor contractor to Licensor, as may be required under its Prime Contract 

with DOE. 

11.8 This Agreement will be construed according to the laws of the State of Tennessee and the 

United States of America and in the English language. Any action brought to enforce any 

provision or obligation hereunder will be brought in the Federal District Court for the 

Eastern District of Tennessee. However, if jurisdiction is not found in Federal Court, 

actions will be brought in Tennessee in Knox, Roane, or Anderson County Court. 

11.9 This Agreement is solely for the benefit of the Parties, represents the entire and integrated 

agreement between the Parties, and supersedes all prior negotiations, representations, and 

agreements, either written or oral. This Agreement, and each and every provision thereof, 

is for the exclusive benefit of Licensor and Licensee and not for the benefit of any third 

party, except to the extent expressly provided in the Agreement. 

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ARTICLE 12 

OFFER 

12.1 The offer to execute this Agreement shall expire if this Agreement is not signed by 

Licensee and returned to Licensor on or before ____________________. 

IN WITNESS WHEREOF, each of the Parties hereto has caused this Agreement to be executed 

in duplicate originals by its duly authorized officers or representatives. 

UT-BATTELLE, LLC 

By: 

Name (typed): 

Title: 

Michael J. Paulus 

Director, Technology Transfer 

Date: 

LICENSEE NAME 

By: 

Name (typed): 

Title: 

Date: 

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EXHIBIT A: LICENSED PATENTS 

UT- 

Battelle 

ID 

Number 

Countr 

y Title Inventor(s) 

Application 

Number/ 

Patent Number 

Filing/ 

Issue 

Date 

Filed as 

LARGE 

/SMAL 

L entity 

Initials 

UT-Battelle: 

Date: 

Licensee: 

Date: 

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A. Execution Fee: 

EXHIBIT B: TERM SHEET & FINANCIAL OBLIGATIONS 

B. Annual Minimum Payments and/or Milestone Payments: 

C. Running Royalty Rate Structure: 

Accounting Period Running Royalty Due Date 

C. Minimum Royalty Rate Structure: 

Licensee shall pay Licensor running royalties as set forth in C above, but in no event 

shall royalties for a calendar year be less than the following Minimum Annual 

Royalties during each of the calendar years indicated in the table below: 

Accounting Period Minimum Royalties (USD) Due Date 

D. Reimbursement of Patent Costs: 

N O T I C E 

This Exhibit contains financial and commercial information that is BUSINESS 

SENSITIVE and the Parties hereby agree not to use or disclose this Exhibit to any third 

party without the advance written approval of the other Party, except: (1) to those 

necessary to enable the Parties to perform under this Agreement; (2) as may be required 

by the UT-Battelle Prime Contract with the DOE under the same restrictions as set forth 

herein; or (3) in event of breach of any provision of this Agreement by either Party, to 

those deemed necessary by the non-breaching Party to enforce the non-breaching Party’s 

rights under the Agreement. 

Initials 

UT-Battelle: 

Date: 


Date: 

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EXHIBIT C: DEVELOPMENT AND COMMERCIALIZATION PLAN 

[The commercialization plan outlines milestones, such as targets for your company's investment 

in product development, target time periods for first commercial sales, or targets for sales above 

a certain quantity.] 

N O T I C E 

This Exhibit contains financial and commercial information that is BUSINESS 

SENSITIVE and the Parties hereby agree not to use or disclose this Exhibit to any third 

party without the advance written approval of the other Party, except: (1) to those 

necessary to enable the Parties to perform under this Agreement; (2) as may be required 

by the UT-Battelle Prime Contract with the DOE under the same restrictions as set forth 

herein; or (3) in event of breach of any provision of this Agreement by either Party, to 

those deemed necessary by the non-breaching Party to enforce the non-breaching Party’s 

rights under the Agreement. 

Initials 

UT-Battelle: 

Date: 


Date: 

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Nonexclusive Patent License - Oak Ridge National Laboratory

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